𝐓𝐲𝐩𝐞𝐬 𝐨𝐟 𝐎𝐟𝐟𝐢𝐜𝐞 𝐀𝐜𝐭𝐢𝐨𝐧

There are two fundamental types of Patent Office Actions: Non-Final Office Actions and Final Office Actions. Upon receiving a Non-Final Patent Office Action, you have the opportunity to amend the claims and make other necessary changes (without introducing new material) in an effort to bring the claims and the entire patent application into a condition for allowance. However, if the Patent Examiner deems that the amendments and arguments provided in response to the Non-Final Office Action are inadequate or unpersuasive, a Final Office Action will likely be prepared and issued. A Final Patent Office Action is issued when the response:

• 🚀 to the Non-Final Office Action fails to address all issues raised, or

• 🚀 introduces new issues that impede the allowance of the claims.

Patent Examiners are obligated to review the claim amendments in response to a Non-Final Office Action, but they may not be obligated to evaluate amendments or new arguments in response to a Final Office Action, except under limited circumstances. Amendments after a Final Office Action are allowed for limited purposes as per 37 C.F.R. 1.116(b), including:

• 📍Canceling claims

• 📍Complying with previously outlined form requirements

• 📍Presenting rejected claims in a better form for appeal consideration, or

• 📍Providing good and sufficient reasons for necessary amendments not presented earlier.

𝐖𝐡𝐚𝐭 𝐲𝐨𝐮 𝐧𝐞𝐞𝐝 𝐭𝐨 𝐝𝐨 𝐰𝐡𝐢𝐥𝐞 𝐝𝐫𝐚𝐟𝐭𝐢𝐧𝐠 𝐚𝐧 𝐎𝐟𝐟𝐢𝐜𝐞 𝐀𝐜𝐭𝐢𝐨𝐧 𝐫𝐞𝐬𝐩𝐨𝐧𝐬𝐞?

After carefully reviewing a patent application, a patent examiner will send an applicant an official letter known as an Office Action. The applicant must prepare and submit a response with the required justifications and modifications within the allotted time to refute these rejections or objections.

Here are 3 steps that you must follow to draft your office action response:

𝟏. 𝐀𝐧𝐚𝐥𝐲𝐳𝐞 Each patent application claim is mapped from the examiner's prior-art references in the office action. The applicant must analyze the prior-art literature to determine if the references accurately disclose the patent application claims. The examiner's reading of the claimed invention in light of prior art references is examined to ensure the mapping they provided is accurate.

𝟐. 𝐃𝐞𝐯𝐞𝐥𝐨𝐩 𝐚 𝐩𝐥𝐚𝐧 𝐭𝐨 𝐜𝐨𝐦𝐛𝐚𝐭 𝐨𝐛𝐣𝐞𝐜𝐭𝐢𝐨𝐧𝐬 𝐚𝐧𝐝 𝐫𝐞𝐣𝐞𝐜𝐭𝐢𝐨𝐧𝐬 The applicant formulates a plan after reviewing the office's action. If the patent examiner's interpretation is flawed, the rejections and/or objections can be contested. If not, additional information from the patent application's specification is added to the claims to get around any rejection or objection.